OHIM boards should have more discretion, says Advocate General

Advocate General Sharpston has issued an opinion urging the European Court of Justice (ECJ) to overturn an earlier ruling and suggesting that the Office for Harmonization in the Internal Market (OHIM) Board of Appeal is allowed to take material not presented to the first instance OHIM department into consideration, but that it is not required to do so.

The opinion was issued in response to an appeal from a Court of First Instance (CFI) decision in which the court stated that, pursuant to Article 74(2) of the Community Trademark Regulation, the Board of Appeal is required to base its decision on all matters of fact and of law which the party concerned introduced either in the proceedings before the department in the application at first instance or in the appeal. Accordingly, the CFI stated that even where documentary materials have not been presented at OHIM opposition level (first instance), this does not preclude the parties from asserting such information on appeal.

The case concerned the company Atlantic Richfield which had filed an application for a Community trademark registration of the word mark ARCOL. Kaul GmbH brought an opposition based on the earlier registered mark CAPOL. The opposition was rejected by the OHIM Opposition Division due to no likelihood of confusion. Kaul appealed the decision to the Board of Appeal, which dismissed the appeal, refusing to take into consideration the evidence that was not submitted before the first instance.

Kaul appealed to the CFI, which held that the notion that new statements of facts submitted before the Board of Appeal cannot be taken into account, is not compatible with the continuity of functions between the departments of OHIM as regards both ex parte and inter partes proceedings. Thus, the Board of Appeal could not refuse to take account of the evidence brought before it in the appeal.

In her opinion, Sharpston urges the ECJ to set aside the judgment of the CFI and refer the case back for a new decision as she thinks that continuity of terms between the departments cannot require the Board of Appeal to take account of material which could validly have been disregarded by the first instance department as not submitted in due time before that department. However, Sharpston believes that the functional continuity between the first instance and the Board of Appeal allows the latter to take such material into account, but does not impose on it a requirement to do so. Thus, the question of whether new material of facts and of law can be submitted before the Board of Appeal is at the discretion of the Board of Appeal, which should exercise the discretion on legitimate grounds, the validity of which can be reviewed by the courts.

Sharpston's opinion appears to be in line with the new third subparagraph of Rule 50(1) of the Community Trademark Implementation Regulation, according to which a Board of Appeal may not take additional evidence into consideration, unless it considers the material should be taken into account. This rule came into effect in July 2005 and was thus not applicable in the present case.

Peter Gustav Olson, Plesner, Copenhagen